Recent Blog Posts

“Comments Anyone?”: PTO Makes Proposed New IPR Amendment ProcessOn October 29, 2018, the Patent and Trademark Office published a request for comments on a proposal to establish a new procedure by which patent owners may seek to amend their claims during inter partes review. Comments are due on or before December 14, 2018. The PTO proposes a pilot program implementing the new amendment process to begin shortly after the deadline for comments.
Currently, a patent owner may move to amend once, following institution of inter partes review. A petitioner...More

The Supreme Court Finds IPR Proceedings ConstitutionalInter partes review (IPR) is a procedure that allows a party to challenge the validity of an issued patent based on prior art patents or printed publications. IPRs first became available in 2013 following passage of the Leahy-Smith America Invents Act. Some have questioned whether this post-grant review of patent validity is constitutional. Today, the United States Supreme Court declared that neither Article III of the Constitution nor the Seventh Amendment right to trial by jury precluded such reviews by...More

Breadcrumbs Lead Federal Circuit to “Inurement”
“Inurement,” \i-ˈnu̇r-mənt, -ˈnyu̇r\ noun :in patent law the concept that the action of another may inure to one’s benefit, esp. where the actions of another in reducing an invention to practice may be attributed to the named inventor for purposes of establishing priority of invention. The Federal Circuit recently had occasion to address this concept in the context of an inter partes review. In NFC Technology, LLC v. Matal, 871 F.3d 1367 (Fed. Cir. 2017) the Federal Circuit reversed the Board’s...More

One Fish, Two Fish, Red Fish, Enfish: Unraveling the Maze of Parallel Court/PTAB Proceedings
The saga of Enfish v. Microsoft continues. The Enfish litigation provides a textbook example of the multi-pronged defense now common with the advent of post-grant review and the evolving law concerning unpatentable subject matter. Many are no doubt aware of the significant Federal Circuit decision on patentable subject matter (i.e. Section 101) which this litigation spawned. Less familiar are the parallel developments in the PTAB. Most recently, the Federal Circuit affirmed the PTAB’s determination that some, but not all, of...More

Federal Circuit Declares Unreviewable PTAB’s Refusal to Apply Assignor Estoppel
The Federal Circuit continues to declare aspects of the PTAB’s work to be beyond its review. Most recently, in Husky Injection Molding Systems Ltd., v. Athena Automation Ltd., Case Nos. 2015-1726, 2015-1727 (Fed. Cir. Sept. 23, 2016), the Federal Circuit, in a 2-1 decision, concluded that it lacked authority to question the PTAB’s refusal to extend the equitable doctrine of assignor estoppel to PTAB proceedings. We previously reported on the Federal Circuit’s opinion regarding the merits of the PTAB’s Final Decision...More

Federal Circuit Suggest Expansive Interpretation of “Adapted to” in Affirming CBM Cancellation
In a recent non-precedential decision, the Federal Circuit suggested a very expansive interpretation for the oft-used phrase “adapted to.” Relying upon the prosecution history, the Federal Circuit determined that the Board correctly construed claims relating to interactive video programming, and on that basis affirmed the Board’s decision that the claims were anticipated by a prior art reference. Intertainer, Inc. v. Hulu, LLC, No. 2015-2065 (Fed. Cir. Sept. 26, 2016) (non-precedential).
In sum, the Board’s constructions correctly capture the positions that [Patent...More

PTAB Extends a Helping Hand to Petitioner: Advising Petitioner to File Supplemental Evidence Rather Than Supplemental Information
In a bit of “inside baseball,” the PTAB recently clarified the difference between supplemental evidence and supplemental information. Practitioners would do well to give careful attention to this distinction. The difference can have profound consequences to an IPR Petitioner.
In Generico LLC v. Dr. Falk Pharma GmbH, IPR2016-00297, Paper No. 15 (July 15, 2016), the PTAB entered an order regarding the conduct of proceedings. The order addressed the Petitioner’s request to file a motion to supplement information pursuant to 37 C.F.R....More

PTAB Finds Motivation to Combine References, but Cancellation Comes Too Late for More than 200 Defendants
On July 6, 2016, the PTAB cancelled claims in a patent which had bedeviled more than 250 named defendants in litigation dating back to 2008. The list of defendants reads like a Who’s Who of financial and commercial businesses, including the nation’s most prominent banks, credit card companies, online stock traders, e-Commerce retailers, cable and telecommunications companies, airlines, and even all twelve of the nation’s Federal Reserve banks. Any plans the patent owner had to continue its siege of these...More

Groundhog Day . . . Again: Observations on the Oral Argument in Cuozzo Speed Technologies, LLC v. LeeThe much anticipated argument in Cuozzo Speed Technologies, LLC v. Lee occurred Monday, April 25, 2016 before the United States Supreme Court. One can glean some insight from the Justices’ questions and remarks, but the ultimate outcome in this seminal decision remains uncertain. The following reflects the tenor of the remarks of seven of the Justices’ who spoke during oral argument. In keeping with his much reported practice at these arguments, Justice Thomas remained mute. The following discussion focuses exclusively...More